UNITED STATES, · 4. The names of all law firms and the partners or associates that appeared for...

Appeal No. 2019-1464

UNITED STATES COURT OF APPEALS FEDERAL CIRCUIT

ALACRITECH, INC.,

Appellant,

v.

INTEL CORPORATION, CAVIUM, LLC, DELL INC.,

Appellees,

UNITED STATES,

Intervenor.

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board

IPR2017-01393

APPELLEES INTEL CORPORATION, CAVIUM, LLC, and DELL INC. COMBINED PETITION FOR REHEARING AND REHEARING EN BANC

Garland T. Stephens Melissa L. Hotze Richard D. Eiszner Weil, Gotshal & Manges LLP 700 Louisiana St., Suite 1700 Houston, TX 77002 713-546-5011 [email protected] [email protected] [email protected]

Anne M. Cappella Amanda Branch Weil, Gotshal & Manges LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 650-802-3141 [email protected] [email protected] Counsel for Intel Corporation

Additional Counsel listed on the following page

Case: 19-1464 Document: 68 Page: 1 Filed: 04/06/2020

Gregory Silbert Weil, Gotshal & Manges LLP 767 Fifth Avenue New York, NY 10153 212-310-8846 [email protected] Counsel for Intel Corporation Kirk T. Bradley ALSTON & BIRD LLP Bank of America Plaza 101 S. Tryon St., Suite 4000 Charlotte, NC 28280 704-444-1000 [email protected] Brady Cox ALSTON & BIRD LLP Chase Tower 2200 Ross Ave., Suite 2300 Dallas, TX 75201 214-922-3400 [email protected] Emily Chambers Welch ALSTON & BIRD LLP 1201 West Peachtree St. Atlanta, GA 30309 404-881-7000 [email protected] Counsel for Dell Inc.

Karineh Khachatourian Rimon, P.C. 2479 E. Bayshore Road, Suite 210 Palo Alto, CA 94303 650-461-4433 [email protected] Nikolaus A. Woloszczuk Rimon, P.C. 2479 E. Bayshore Road, Suite 210 Palo Alto, CA 94303 650-461-4433 [email protected] Counsel for Cavium, LLC


i

CERTIFICATE OF INTEREST FOR INTEL CORPORATION

Counsel for the Appellee, Intel Corporation, certifies the following (use

“None” if applicable; use extra sheets if necessary):

1. Full Name of Party Represented by me:

Intel Corporation

2. Name of Real Party in interest (Please only include any real party in

interest NOT identified in Question 3) represented by me is:

Intel Corporation

3. Parent corporations and publicly held companies that own 10% or more

of stock in the party:

None

4. The names of all law firms and the partners or associates that appeared

for the Party or amicus now represented by me in the trial court or agency or are

expected to appear in this court (and who have not or will not enter an appearance

in this case) are:

Adrian Percer, Justin Constant, William S. Ansley, all of Weil, Gotshal

& Manges LLP.

Jeremy Jason Lang, formerly of Weil, Gotshal & Manges LLP.

5. The title and number of any case known to counsel to be pending in this

or any other court or agency that will directly affect or be directly affected by this


ii

court’s decision in the pending appeal. See Fed. Cir. R. 47.4(a)(5) and 47.5(b). (The

parties should attach continuation pages as necessary).

Intel Corporation v. Alacritech, Inc., IPR2018-00226 (PTAB)

Alacritech, Inc. v. CenturyLink, Inc., 2:16-cv-00693-JRG-RSP (E.D.

Tex.)

Alacritech, Inc. v. Wistron Corp., 2:16-cv-00692-JRG-RSP (E.D. Tex.)

Alacritech, Inc. v. Dell Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.)

Alacritech, Inc. v. Intel Corporation, Docket No. 19-1443 (Fed. Cir.)



Cavium, LLC v. Alacritech, Inc., Docket No. 19-1447 (Fed. Cir.)

Dell Inc. v. Alacritech, Inc., Docket No. 19-1449 (Fed. Cir.)






Dated: April 6, 2020 /s/ Garland T. Stephens Garland T. Stephens


iii

CERTIFICATE OF INTEREST FOR CAVIUM, LLC

Counsel for the Appellee, Cavium, LLC, certifies the following (use “None”

if applicable; use extra sheets if necessary):


Cavium, LLC



None



Marvell Technology Group, Ltd.

Marvell Technology, Inc.




in this case) are:

David T. Xue of Rimon, P.C.




iv



Intel Corporation v. Alacritech, Inc., IPR2018-00226 (PTAB)


Tex.)






Cavium, LLC v. Alacritech, Inc., Docket No. 19-1447 (Fed. Cir.)

Dell Inc. v. Alacritech, Inc., Docket No. 19-1449 (Fed. Cir.)






Dated: April 6, 2020 /s/ Karineh Khachatourian Karineh Khachatourian


v

CERTIFICATE OF INTEREST FOR DELL INC.

Counsel for the Appellee, Dell Inc., certifies the following (use “None” if

applicable; use extra sheets if necessary):


Dell Inc.



N/A



Denali Intermediate Inc.

Dell Technologies, Inc.




in this case) are:

Christopher Douglas (Alston & Bird)




vi



Patent Trial and Appeal Board

Intel Corp. v. Alacritech, Inc., IPR2018-00226 (PTAB)

U.S. District Court


Tex.)



Federal Circuit Court of Appeals

Alacritech, Inc. v. Intel Corporation, No. 19-1443 (Fed. Cir.)

Alacritech, Inc. v. Intel Corporation, No. 19-1444 (Fed Cir.)


Cavium, LLC v. Alacritech, Inc., No. 19-1447 (Fed Cir.)

Dell Inc. v. Alacritech, Inc., No. 19-1449 (Fed Cir.)







vii

Dated: April 6, 2020 /s/ Kirk T. Bradley Kirk T. Bradley


viii

TABLE OF CONTENTS

Page

CERTIFICATE OF INTEREST FOR INTEL CORPORATION .............................. i

CERTIFICATE OF INTEREST FOR CAVIUM, LLC .......................................... iii

CERTIFICATE OF INTEREST FOR DELL INC. ................................................... v

STATEMENT OF RELATED CASES ..................................................................... x

FEDERAL CIRCUIT RULE 35(b)(2) STATEMENT OF COUNSEL .................... 1

INTRODUCTION ..................................................................................................... 2

FACTUAL BACKGROUND .................................................................................... 3

ARGUMENT ............................................................................................................. 4

I. Panel Rehearing Is Warranted Because Both Appellant Alacritech and Appellee Intel Agree This Case Should Not Be Remanded and Instead Should Proceed On The Merits Absent En Banc Intervention ........................ 6

II. If Panel Rehearing is Denied, En Banc Rehearing Is Warranted On Whether The Case Should Be Remanded ....................................................... 7

CONCLUSION .......................................................................................................... 9


ix

TABLE OF AUTHORITIES

Page(s)

Cases

Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) ...................................................................passim

Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140, D.I. 115 (Fed. Cir. Mar. 23, 2020) ................................................. 2

Edmond v. United States, 520 U.S. 651 (1997) .............................................................................................. 1

Free Enterprise Fund v. PCAOB, 561 U.S. 477 (2010) .............................................................................................. 1

Freytag v. Comm’r, 501 U.S. 868 (1991) .......................................................................................... 1, 7

Koninklijke Philips N.V. v. Microsoft Corp., No. 19-1178, D.I. 77 (Fed. Cir. Nov. 18, 2019) ................................................... 6

L’Oreal USA, Inc. v. Liqwd, Inc., No. 19-2410, D.I. 24 (Fed. Cir. Mar. 4, 2020) ..................................................... 7

Polaris Innovations Ltd. v. Kingston Tech. Co., Inc. No. 18-1831, D.I. 106 (Fed. Cir. Mar. 16, 2020) ............................................. 2, 6

Other Authorities

U.S. CONST., art. II, § 2, cl.2 .................................................................................... 3


x

STATEMENT OF RELATED CASES

No other appeal in or from this case has been before this Court or any other

court of appeals. This appeal involves the Final Written Decision by the Patent Trial

and Appeal Board (“the Board”) in Inter Partes Review (“IPR”) case number

IPR2017-01393 concerning U.S. Patent No. 9,055,104 (“the 104 Patent”), which is

assigned to Appellant Alacritech, Inc. (“Alacritech”).

A number of related appeals are also pending before this Court from IPR

proceedings in which Appellee Intel Corporation (“Intel”) challenged claims of other

related patents owned by Alacritech. The Court ordered that the appeals be treated

as four companion cases. The Court described the appeal at issue herein as “Group

III.” “Group I” consists of Appeal Nos. 2019-1443, -1447, -1449, and -1450.

“Group II” consists of Appeal Nos. 2019-1444, -1445, and -1466. “Group IV”

consists of Appeal Nos. 2019-1467 and 2019-1468. Each of these appeals has been

assigned to the same merits panel for oral argument.

The Court’s decision in this case may affect or be affected by the following

related cases pending before the U.S. District Court for the Eastern District of Texas:

Alacritech, Inc., v. CenturyLink, Inc., Case No. 2:16-cv-00693-RWS-RSP (LEAD

CASE), Alacritech, Inc., v. Dell Inc., Case No. 2:16-cv-00695-RWS-RSP, and

Alacritech, Inc., v. Wistron Corp., Case No. 2:16-cv-00692-JRG-RSP. Intel

intervened in all three cases and Cavium, Inc. (“Cavium”) intervened in the Dell Inc.


xi

(“Dell”) case. The 104 Patent at issue in this appeal was previously asserted in those

cases. These district court cases are currently stayed.


FEDERAL CIRCUIT RULE 35(b)(2) STATEMENT OF COUNSEL

Based on my professional judgment, I believe the panel decision is contrary to

the following decisions of the Supreme Court of the United States: Free Enterprise

Fund v. PCAOB, 561 U.S. 477 (2010); Edmond v. United States, 520 U.S. 651

(1997); and Freytag v. Comm’r, 501 U.S. 868 (1991).

Based on my professional judgment, this appeal requires an answer to one or

more precedent-setting questions of exceptional importance:

(1) Whether the case should be allowed to proceed on the merits when no

party is requesting remand based on Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d

1320 (Fed. Cir. 2019);

(2) Whether litigants who failed to raise an Appointments Clause challenge

before the Patent Trial and Appeal Board (“PTAB” or “Board”) should be permitted

to raise such a challenge on appeal when there is no need for timely resolution or

remedial action;

(3) If administrative patent judges (“APJs”) are principal officers, what

remedy is warranted for this and similarly-situated cases; and

(4) Whether APJs of the PTAB are inferior or principal officers of the United

States under the Appointments Clause.


Counsel for Intel Corporation


2

INTRODUCTION

Intel1 respectfully requests that this Court grant panel rehearing so that this

Court may consider the merits of this appeal without an intervening remand to the

PTAB. In particular, these appeals differ significantly from other cases that have

been remanded based on Arthrex because both Appellant Alacritech and Appellee

Intel now agree that the case should not be remanded to the PTAB.2 Patent

owner/Appellant Alacritech’s petition for rehearing seeks to abandon its

Appointments Clause challenge unless the en banc Federal Circuit holds that the

America Invents Act (“AIA”) is incurably unconstitutional. D.I. 65. The en banc

Federal Circuit recently rejected this same extraordinary request to hold the AIA

incurably unconstitutional in both Polaris Innovations Ltd. v. Kingston Tech. Co.,

Inc. No. 18-1831, D.I. 106 (Fed. Cir. Mar. 16, 2020) and in Arthrex, Inc. v. Smith

& Nephew, Inc., No. 18-2140, D.I. 115 (Fed. Cir. Mar. 23, 2020), and in any event

that request would not lead to a remand. Given that the Federal Circuit has recently

rejected the same en banc request Alacritech is now making twice, Intel respectfully

1 All Appellees also join Intel in this Petition.

2 For the concurrently-filed Joint Motion That, In the Event This Court Denies Alacritech’s Pending Petition for Rehearing En Banc, This Court Should Retain the Mandate and Proceed on the Merits, the United States does not oppose the other parties’ request insofar as they are requesting that the court vacate its prior judgment vacating the Board’s decisions in these appeals, hold any Appointments Clause challenge affirmatively waived, and proceed to merits of these cases.


3

submits that panel rehearing is warranted so that Alacritech’s request to abandon its

Appointments Clause Challenge can be given effect and the case can proceed on the

merits before this Court without an unnecessary remand that neither party is seeking.

FACTUAL BACKGROUND

Alacritech did not raise an Appointments Clause challenge before the Board.

Instead, Alacritech argued for the first time in its opening brief to this Court that the

Board’s decision was invalid because the APJs who rendered it were appointed in

violation of the Appointments Clause, U.S. CONST., art. II, § 2, cl.2.

In its October 31, 2019 decision, the Arthrex panel found that APJs are

“principal officers,” severed the application of Title 5’s removal restrictions to APJs,

rendering them inferior officers, and then remanded the case to a new panel of APJs

for a new hearing. Id. at 1338-1340. The Federal Circuit recently rejected the

Arthrex parties’ petitions for en banc rehearing. Arthrex, D.I. 115.

On December 12, 2019, Alacritech submitted a letter pursuant to Federal

Circuit Rule 28(i) identifying the Arthrex decision as supplemental authority. D.I.

51. In its letter, Alacritech requested that the Federal Circuit proceed with the

appeals and “resolve its arguments that the PTAB decision should be reversed or

vacated on the merits” and only remand the Board’s decisions consistent with this

Court’s decision in Arthrex if the Federal Circuit decided against Alacritech on the

merits. Id. at 1.


4

On February 20, 2019, the Court vacated the Board’s decisions and

“remanded to the Board for proceedings consistent with Arthrex.” D.I. 63 at 3.

On March 16, 2020, Alacritech filed a petition for en banc rehearing asking

the Federal Circuit to invalidate the America Invents Act and reverse the Board’s

order. D.I. 65 at 8. If the rehearing en banc is denied, Alacritech alternatively asks

for panel rehearing so that it “can abandon its Appointments Clause argument and

the panel can address Alacritech’s remaining arguments rather than remanding” to

the PTAB. Id. at 9.

On April 6, 2020, Intel and Alacritech submitted the concurrently-filed Joint

Motion That, In the Event This Court Denies Alacritech’s Pending Petition for

Rehearing En Banc, This Court Should Retain the Mandate and Proceed on the

Merits, which requests that the Court vacate its order, allow Alacritech to withdraw

is Appointment Clause challenge and proceed on the merits if the Court denies

Alacritech’s pending petition for en banc rehearing.

ARGUMENT

Both Appellant Alacritech and Appellee Intel now agree that this Court should

proceed to the merits of the appeal without a remand to the Board based on a

violation of the Appointment Clause. Alacritech now seeks instead to abandon its

challenge under the Appointments Clause if the en banc Court does not take the

extraordinary step of holding the AIA entirely invalid—a request the en banc Federal


5

Circuit has recently rejected twice and that in any event would not lead to a remand.

Proceeding on the merits of the appeal without a remand is thus desired by both

Alacritech and Intel—who are in full agreement on that critical point—and is the

most efficient course of action for the parties, the Board, and the Court. The appeal

is fully briefed and merely waiting for an oral argument date. Therefore, Intel

respectfully submits that panel rehearing is warranted so that Alacritech’s request to

abandon its Appointment Clause challenge can be given effect and the appeal can

simply proceed on the merits.

Although Intel wishes the Federal Circuit to decide the consolidated appeals

on the merits without a remand, if the panel nonetheless were to deny panel rehearing

and order a remand, Intel would respectfully request en banc rehearing on whether

Alacritech’s request to abandon its Appointment Clause challenge should be given

effect, whether APJs are inferior officers, whether Alacritech forfeited its

Appointments Clause challenge by not raising it before the Board below, and what

remedy is appropriate when the patent owner asks to proceed on the merits before

the Federal Circuit even after Arthrex held the PTAB trials below violated the

Constitution.


6

I. Panel Rehearing Is Warranted Because Both Appellant Alacritech and Appellee Intel Agree This Case Should Not Be Remanded and Instead Should Proceed On The Merits Absent En Banc Intervention

This case is unusual because both Appellant Alacritech and Appellee Intel

now agree that the case should not be remanded pursuant to Arthrex. Alacritech

initially raised an Appointments Clause challenge, but has now asked to withdraw

that challenge unless its en banc request for an extraordinary remedy (to invalidate

the AIA) is granted. D.I. 65. The en banc Federal Circuit recently denied this same

request in Polaris and Arthrex and nothing suggests that its decision here will be any

different.

Proceeding on the merits in this Court is the most efficient course of action

and will conserve judicial resources. The PTAB and the parties have invested

substantial time in these IPRs and the issues are fully briefed before this Court. All

that remains is for the Court to set and hold oral argument. This will also reduce the

number of cases impacted by Arthrex if all seven of the instant consolidated appeals

are allowed to proceed on the merits. Furthermore, it is in the public interest to

resolve these disputes expeditiously to provide certainty regarding the scope of

Alacritech’s patent rights and reduce the demands on the PTAB and this Court. This

Court has allowed other patent owners to withdraw their Appointments Clause

challenges after the briefing is complete, so that their appeal can proceed on the

merits before this Court. See Koninklijke Philips N.V. v. Microsoft Corp., No. 19-


7

1178, D.I. 77 (Fed. Cir. Nov. 18, 2019); L’Oreal USA, Inc. v. Liqwd, Inc., No. 19-

2410, D.I. 24 (Fed. Cir. Mar. 4, 2020). In light of Alacritech’s withdrawal of its

request for an Arthrex remand, Intel respectfully requests panel rehearing so that this

case can be addressed on the merits.

II. If Panel Rehearing is Denied, En Banc Rehearing Is Warranted On Whether The Case Should Be Remanded

Intel wishes for the Court to grant panel rehearing so that these fully-briefed

appeals may proceed on the merits before the Federal Circuit without remand. To

the extent that the panel denies that request and orders a remand, Intel submits that

en banc rehearing of that order would be warranted.

As an initial matter, if the panel denies Intel’s request and orders a remand,

Intel respectfully submits that the en banc court should allow Alacritech to abandon

its Appointment Clause Challenge so the case can proceed on the merits for the

reasons discussed above.

In addition, while Intel recognizes that existing circuit precedent is to the

contrary, Intel respectfully submits that APJs are inferior officers because of

significant direction and supervision that the Director has as a “superior” over the

APJs and the fact that the Supreme Court has held that similar direction and

supervision renders officers “inferior officers.” See, e.g., Freytag, 501 U.S. at 881-

82. Indeed, the Director’s ability to both remove APJs and control the APJs’


8

decisions places the APJs well within the scope of inferior officers under controlling

Supreme Court precedent.

Even if the proceedings below violated the Constitution’s Appointments

Clause (which Intel disputes), Intel respectfully submits that the question of whether

a party can forfeit its challenge and proceed on the merits warrants en banc review.

The justification in the Arthrex decision for ignoring Arthrex’s forfeiture does not

provide a sufficient basis to entertain Alacritech’s belated challenge given that the

need for timely resolution and remedial action no longer exists.

Further, as explained by Judge Dyk in his dissent from the denial of rehearing

en banc in Arthrex, when the judiciary construed the statute to permit severance, its

effect should have been both retrospective and prospective. As Judge Dyk

explained, “the statute here must be read as though the APJs had always been

constitutionally appointed.” Arthrex, D.I. 115 at 36. In other words, APJs should

be treated as removable at will prior to the issuance of the Arthrex decision. This

fix should apply retrospectively, so that a remand is not required. Arthrex, D.I. 115

at 34 (“If the ruling were retroactive, the actions of APJs in the past would have been

compliant with the constitution and the statute.”).

Finally, Intel respectfully submits that the equities do not require remanding

this case and certainly not to a new set of APJs, particularly when Alacritech was


9

willing to proceed on the merits before this Court even after the appointment of APJs

was held unconstitutional.

For all these reasons, Intel respectfully submits that en banc review is

warranted if panel review is denied.

CONCLUSION

For the foregoing reasons, Intel respectfully requests that the Court grant

panel rehearing and allow Alacritech to drop its Appointments Clause challenge, but

if the panel does not do so, then en banc review is warranted for the reasons set forth

above.

Dated: April 6, 2020 Respectfully submitted,

/s/ Garland T. Stephens

Garland T. Stephens Weil, Gotshal & Manges LLP 700 Louisiana St., Suite 1700 Houston, TX 77002 713-546-5011 [email protected] Melissa L. Hotze Weil, Gotshal & Manges LLP 700 Louisiana St., Suite 1700 Houston, TX 77002 713-546-5033 [email protected] Richard D. Eiszner Weil, Gotshal & Manges LLP 700 Louisiana St., Suite 1700 Houston, TX 77002


10

713-546-5249 [email protected] Anne M. Cappella Weil, Gotshal & Manges LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 650-802-3141 [email protected] Amanda Branch Weil, Gotshal & Manges LLP 201 Redwood Shores Parkway Redwood Shores, CA 94065 650-802-3138 [email protected] Gregory Silbert Weil, Gotshal & Manges LLP 767 Fifth Avenue New York, NY 10153 212-310-8846 [email protected]

Counsel for Intel Corporation /s/ Karineh Khachatourian Karineh Khachatourian Rimon, P.C. 2479 E. Bayshore Road, Suite 210 Palo Alto, CA 94303 650-461-4433 [email protected] Nikolaus A. Woloszczuk Rimon, P.C. 2479 E. Bayshore Road, Suite 210 Palo Alto, CA 94303 650-461-4433


11

[email protected] Counsel for Cavium, LLC /s/ Kirk T. Bradley Kirk T. Bradley ALSTON & BIRD LLP Bank of America Plaza 101 S. Tryon St., Suite 4000 Charlotte, NC 28280 704-444-1000 [email protected] Brady Cox ALSTON & BIRD LLP Chase Tower 2200 Ross Ave., Suite 2300 Dallas, TX 75201 214-922-3400 [email protected] Emily Chambers Welch ALSTON & BIRD LLP 1201 West Peachtree St. Atlanta, GA 30309 404-881-7000 [email protected]

Counsel for Dell Inc.


ADDENDUM


NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit

______________________

INTEL CORPORATION, CAVIUM, LLC, DELL, INC., Appellants

v.

ALACRITECH, INC., Cross-Appellant

UNITED STATES,

Intervenor ______________________

2019-1443, -1447, -1449, -1450

______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017-01405, IPR2017-01735, and IPR2018-00336. ---------------------------------------------------------------------------------

ALACRITECH, INC.,

Appellant

v.

INTEL CORPORATION, CAVIUM, LLC, DELL, INC., WISTRON CORPORATION,

Appellees

Case: 19-1464 Document: 63 Page: 1 Filed: 02/20/2020Case: 19-1464 Document: 68 Page: 26 Filed: 04/06/2020

INTEL CORPORATION v. ALACRITECH, INC. 2

UNITED STATES, Intervenor

______________________

2019-1444, -1445, -1466 ______________________

Appeals from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in Nos. IPR2017-01391, IPR2017-01392, IPR2017-01406, IPR2017-01707, IPR2018-00329, and IPR2018-00375. ---------------------------------------------------------------------------------

ALACRITECH, INC.,

Appellant

v.

INTEL CORPORATION, CAVIUM, LLC, DELL INC., Appellees

UNITED STATES,

Intervenor ______________________

2019-1464

______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017-01393, IPR2017-01714, and IPR2018-00374. ---------------------------------------------------------------------------------

ALACRITECH, INC.,

Appellant

v.



INTEL CORPORATION, CAVIUM, LLC, DELL, INC., Appellees

UNITED STATES,

Intervenor ______________________

2019-1467, -1468

______________________

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2017-01409, IPR2017-01410, IPR2017-01736, IPR2017-01737, IPR2018-00338, and IPR2018-00339.

______________________ PER CURIAM.

O R D E R In its opening briefs in each of the above appeals and cross-appeals, Alacritech, Inc. argues that the final written decisions at issue in these appeals exceed the scope of the Patent Trial and Appeal Board’s authority and violate the Constitution’s Appointments Clause. In light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), the court now vacates the Board decisions and re-mands for proceedings consistent with this court’s decision in Arthrex. On remand, the Board may also wish to con-sider Samsung Electronics America, Inc. v. Prisua Engi-neering Corp., 948 F.3d 1342 (Fed. Cir. 2020). Accordingly, IT IS ORDERED THAT:

(1) The Patent Trial and Appeal Board’s decisions are vacated, and the cases are remanded to the Board for pro-ceedings consistent with Arthrex and this order.



(2) Each side shall bear its own costs.

February 20, 2020 Date

FOR THE COURT /s/ Peter R. Marksteiner Peter R. Marksteiner Clerk of Court


CERTIFICATE OF COMPLIANCE

1. This brief complies with the type-volume limitation of Federal Rule of

Federal Circuit Rule 32(a) or Federal Rule of Federal Circuit Rule 28.1. This brief

contains 1941 words, excluding the parts of the brief exempted by Federal Rule of

Appellate Procedure 32(f).

2. This brief complies with the typeface requirements of Federal Rule of

Appellate Procedure 32(a)(5) or Federal Rule of Federal Circuit Rule 28.1 and the

type style requirements of Federal Rule of Appellate Procedure 32(a)(6). This brief

has been prepared in a proportionally spaced typeface using Microsoft Word 2016

in Times New Roman 14 point font.

Dated: April 6, 2020 /s/Garland T. Stephens Garland T. Stephens


CERTIFICATE OF SERVICE

I hereby certify that on April 6, 2020, I filed or caused to be filed a copy of

the foregoing with the Clerk of the United States Court of Appeals for the Federal

Circuit via the CM/ECF system and served or caused to be served a copy on all

counsel of record by the CM/ECF system.


Weil, Gotshal & Manges LLP 700 Louisiana St., Suite 1700 Houston, TX 77002 713-546-5011 [email protected] Counsel for Intel Corporation


UNITED STATES, · 4. The names of all law firms and the partners or associates that appeared for...

Documents

Transcript of UNITED STATES, · 4. The names of all law firms and the partners or associates that appeared for...